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Take heed, o inventor: Beware the Ides of March

By Ted J. Barthel and Thomas J. Pienkos

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In 44 B.C., the Ides of March witnessed the end of Julius Caesar. This year, 2013 A.D., the Ides of March will bring an end to the “first-to-invent” principle of U.S. patent law – a paradigm that has been a hallmark of U.S. inventions for more than 200 years.

Currently, the U.S. patent system is based on a unique first-to-invent doctrine, which means that the inventor who first conceived of the invention is considered the first inventor and is entitled to patent protection.

Countries in the rest of the world, however, have patent systems based on a “first-to-file” doctrine, where the patent is granted to the inventor who is the first to file a patent application, regardless of the date of invention.

After March 15, the America Invents Act (AIA) will transform the U.S. patent system from the first-to-invent system to a “first-inventor-to-file” (FITF) system. A policy behind the AIA is to harmonize U.S. patent law with the rest of the first-to-file patent world. Note that the AIA does not move the United States to a true first-to-file patent system in which the person first to the patent office prevails. Under the FITF system, a one-year grace period is provided for filing a patent application after a public disclosure by the inventor.

AIA will greatly expand prior art

After March 15, the AIA will also greatly expand the universe of “prior art” – i.e., publications and other information that can be used to prevent the granting of a patent application. The AIA changes the language of 35 U.S.C. § 102 to encompass a much broader range of material that can be used by the U.S. Patent and Trademark Office (USPTO) to bar a patent from being issued.

To prepare for the dramatic changes coming with the Ides of March, savvy innovators may wish to consider the following measures.